• Bright Data Ltd. v. Oxylabs, UabInstitution denied
  PTAB · Nov 27, 2023 · IPR2023-00840 · APJ Iftikhar Ahmed · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable, principally because Cousins did not disclose the claimed discrepancy identification.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Based on the information presented in the Petition and the supporting evidence, we are not persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review of the challenged claims as set forth in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner and Patent Owner propose constructions for certain claim terms. See Pet. 13–14, 25; Prelim. Resp. 8–12. To the extent necessary, we address some of these arguments as part of our unpatentability analysis below. See infra § III.E.1.c. We, however, determine that no claim terms require express construction. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.” (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803) (Fed. Cir. 1999))).” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “to the selected scraping strategy,” i.e., identifying a discrepancy between two requests. And, as discussed further below, because Petitioner’s contentions as to Cousins’s disclosure are based on Petitioner’s incorrect interpretation of this claim limitation, Petitioner fails to persuade us that Cousins teaches or suggests this claim limitation. Petitioner first relies on Cousins’s disclosure of “two separate received requests where both requests are for the same target site” and Cousins’s teaching to combine those two requests into a single crawl request. Pet. 26 (citing Ex. 1004, 11:17–24). Petitioner fails to explain how this relates to identifying discrepancy between a request and a scraping strategy. As Patent Owner points out, if anything, this disclosure teaches looking for similarities rather than discrepancies between the two requests. After all, Cousins teaches “coalescing multiple requests from different requests sources 136 for similar data into a single crawl, . . . provid[ing] lower overhead, lower latency, and globally higher throughput, [and decreasing] the crawling burden on the target site 128.” Ex. 1004, 11:27–30. No aspect of this disclosure relates to identifying discrepancies or differences.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,965,770
• Forcepoint LLC v. Open Text Inc.Institution denied
  PTAB · Nov 13, 2023 · IPR2023-00784 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–13, 15, 16, and 18 were obvious over either asserted combination.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “degree in computer science or a closely related field and at least two years of experience in the field of computer and network security,” where “[a]dditional education could substitute for professional experience and vice versa.” Pet. 6–7 (citing Ex. 1002 ¶¶ 22–25). Patent Owner argues that a person of ordinary skill in the art instead would have had “a bachelor’s degree in an accredited program of electrical engineering, computer engineering, or computer science, or a similar discipline, and have [had] 2–3 years of practical work experience in the general fields of electrical engineering, computer science, networking, communications, and/or device and network security,” where “[m]ore advanced degrees and/or training in a related discipline can compensate for shorter work experience.” Prelim. Resp. 28; see Ex. 2001 ¶ 50. The parties’ proposed definitions have only minor differences (e.g., at least two years of work experience versus 2–3 years). For purposes of this Decision, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art, except that we eliminate the term “at least” to eliminate vagueness as to the amount of education and practical experience. We note, however, that our conclusions herein would be the same regardless of which party’s definition is used.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “(emphasis added)). We recognize that “[d]ifferent claim terms are presumed to have different meanings.” SimpleAir, Inc. v. Sony Ericsson Mobile Commc’ns, 820 F.3d 419, 431 (Fed. Cir. 2016); Phillips, 415 F.3d at 1314. The challenged claims recite “a plurality of factors” that includes “security history” in a list with the “legitimacy” and “behavior” factors. Each of “security history,” “legitimacy,” and “behavior” are different words. We discern nothing in the claim language suggesting that the presumption that these different words carry different meanings is overcome.” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “495’s list of criteria relied on by Petitioner includes “historical data associated with the IP address of the URL host” in a list of “information” that Hubbard-495’s reputation scoring module uses to generate scores. Ex. 1004, 18:58–19:22. We find that Petitioner’s argument that “Hubbard- 495 explains that this ‘historical data’ could include historical security data,” such as HTTPS certificate details, active content, and a fingerprint (Pet. 25) is not consistent with the description in Hubbard-495. Hubbard-495 merely describes “historical data associated with the IP address of the URL host” in a list of information, without indicating that any other information in that list comprises “historical data.” Ex. 1004, 18:58–19:22. We also agree with Patent Owner (Prelim. Resp. 38) that the phrase “historical data associated with the IP address of the URL host” (Ex. 1004, 19:3–4) does not indicate that the data relates to security events and Petitioner does not identify disclosure in Hubbard-495 that remedies the deficiency.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,438,386
• Forcepoint LLC v. Open Text Inc.Institution denied
  PTAB · Nov 9, 2023 · IPR2023-00786 · APJ Justin T Arbes · IPR · Institution

  Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted §103 grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’928 patent (October 2011), a person of ordinary skill in the art would have had “at least a four-year undergraduate degree in computer science or a closely related field and at least two years of experience in the field of computer and network security,” where “[a]dditional education could substitute for professional experience and vice versa.” Pet. 8 (citing Ex. 1002 ¶¶ 26–29). Patent had “a bachelor’s degree in an accredited program of electrical engineering, computer engineering, or computer science, or a similar discipline, and have [had] 2–3 years of practical work experience in the general fields of electrical engineering, computer science, networking, communications, and/or device and network security,” where “[m]ore advanced degrees and/or training in a related discipline can compensate for shorter work experience.” Prelim. Resp. 28; see Ex. 2001 ¶¶ 49–51. The parties’ proposed definitions have only minor differences (e.g., at least two years of work experience versus 2–3 years). For purposes of this Decision, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art, except that we eliminate the term “at least” to eliminate vagueness as to the amount of education and practical experience. We note, however, that our conclusions herein would be the same regardless of which party’s definition is used.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “potentially malicious “content” that is requested. Limitations [1A]–[1C], for example, recite intercepting a “request” from a web browser, determining whether the “request” is associated with known malicious “content,” and blocking the “request” when it is so associated. Limitations [1D]–[1I] then similarly recite, when the “request” is not so associated, sending the “request” to one or more web servers, receiving web “content” “in response to [that] request,” processing the received web “content” to create a modified version of a web page, and providing that modified version of the web page to the web browser application for rendering and display. Thus, the “request” in claim 1 is a request for “content,” which is what the one or more web servers return. Dependent claims 4 and 12 likewise recite determining “whether a request for the web content from the web browser application is a first request.” Patent Owner argues, and we agree, that Petitioner’s reading of the claim language “obfuscates the difference between (i) determining whether a request from a web browser is server-directed malware (as disclosed in Step 400 of Devarajan) and” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “for limitation [1B]. As explained above, we interpret the limitation to not encompass determining whether the request itself is malicious. See supra Section II.C. Devarajan discloses two sets of actions: a first set, prior to receiving content from the hosting server, designed to protect the hosting server from server-directed malware transmitted by the client (Steps 400 and 1000–1050 in Figure 10), and a second set, after content has been received, designed to protect the client from client-directed malware transmitted by 88–118 (describing the “bi-directional” detection and removal of malware), Figs. 9–10; see Ex. 2001 ¶¶ 58–60, 71–72. Step 400 is part of the first set. At Step 400, before transmitting the client’s request for content from the website, server 108 “determin[es] whether an event associated with the client 900 or its first network resource address 901 matches one or more of a plurality of event signatures 102 in one or more network security device 100 communicatively coupled to the network 101.” Ex. 1004 ¶¶ 96, 111. Specifically, server 108 examines the request to identify characters (i.e., signatures) that match strings indicative of malicious activity (e.g., a DDoS attack signature or an SQL injection attack signature). Id. ¶¶ 41, 45–48. If a match is found, the request is blocked from reaching hosting server 903 (Step 1010); otherwise, the request is transmitted (Step 1050). Id. ¶¶ 98, 111–112. As Patent Owner correctly points out, Devarajan is entirely silent as to what content client 900 is requesting from website 902 at this stage. See Prelim. Resp. 39; Ex. 2001 ¶ 72. Again, Step 400 looks only at the request from the client (i.e., “an event associated with the client 900 or its first network resource address 901” in Petitioner’s view) to determine whether the request itself is malicious as to the hosting server. See Ex. 1004 ¶¶ 96, 111. Step 400 does not determine whether content associated with the request might be malicious. See id. Accordingly, Petitioner has not shown sufficiently that Step 400 discloses limitation [1B].” slip op. at 19

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,025,928
• Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution denied
  PTAB · Nov 2, 2023 · IPR2023-00731 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Petitioner did not show Li was prior art, defeating the reasonable-likelihood showing for all challenged claims and grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’243 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • BurdenDecided for patent owner

    “therefore, “the Board [will] not consider[] these hyperlinked webpages as evidence in [this] proceeding[].” Ex. 3001. As a result, Dr. Hall-Ellis’s declaration does not cite any supporting evidence of record in this proceeding (other than Li itself, Ex. 1005). Ex. 1009 ¶¶ 40–43. The declaration thus “does not disclose the underlying facts or data on which the opinion is based” and is therefore “entitled to little or no weight.” See 37 C.F.R. § 42.65(a). For this reason alone, we find that Petitioner has failed to establish the public accessibility of Li.” slip op. at 15

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Our rules require that “[a]ll evidence must be filed in the form of an exhibit,” and that “[e]ach exhibit must be filed with the first document in which it is cited except as the Board may otherwise order.” Id. §§ 42.63(a), 42.6(c). Despite Petitioner not filing the webpage links as exhibits with Exhibit 1009, we gave Petitioner the opportunity to correct this error and ordered Petitioner to file late copies of these webpage links as exhibits by September 22, 2023. See Ex. 3001 (email order); 37 C.F.R. § 42.6(c) (“except as the Board may otherwise order”). Petitioner declined to do so, instead choosing to request authorization to file a Motion to Dismiss, which we authorized in an order mailed October 2, 2023 (Paper 17).7 In our email order, we informed Petitioner that failure to file the webpage links as exhibits would result in the Board not considering the webpage links as evidence in these proceedings. Ex. 3001. Our order authorizing filing of the Motion to Dismiss did not obviate Petitioner’s responsibility to file copies of the webpage links as exhibits. See id.; Paper 17.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner provides a slightly different definition of the level of skill. Prelim. Resp. 22–23 (citing Ex. 2001 ¶¶ 41–43). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’243 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this decision. Our decision would not have changed had we adopted Patent Owner’s definition.” slip op. at 6

  Claim construction§ 102 anticipationcites KSR · Graham
  Patents in suitUS 8,201,243
• Qualcomm Incorporated v. Fedex Corporate Services, Inc.All claims unpatentable
  PTAB · Oct 6, 2023 · IPR2022-00585 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–33 are unpatentable as obvious: claims 1–3, 12–14, and 23–25 over Lau; claims 1–10, 12–21, and 23–32 over Lau and Buford; and claims 1, 2, 11–13, 22–24, and 33 over Ainsworth.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityOther

    “FedEx filed a motion to terminate the proceeding on the ground that Qualcomm had failed to accurately identify all real parties in interest. Paper 58. We separately denied that motion (Paper 72), and this decision does not further address the issues raised in that motion.” slip op. at 2

  • Skill levelSkill level board ownDecided for petitioner

    “Relying on Dr. Olivier’s testimony, Qualcomm argues that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least two years of experience in design, development and/or testing of hardware and software used in sensor-based networks for monitoring items, or the equivalent.” Pet. 8 (citing Ex. 1003 ¶ 23).6 Qualcomm also contends that “additional education [may] substitute[e] for experience and vice versa.” Pet. 9 (citing Ex. 1003 ¶ 23). FedEx and Dr. Mahon essentially agree with Qualcomm’s articulation of the level of ordinary skill as expressed above. See PO Resp. 30 n.2; Ex. 2201 ¶ 47. Because Qualcomm’s uncontroverted articulation of the level of 6 Qualcomm argues that this is “at least” the level of ordinary skill in the art. Pet. 8. As we did in our instituting decision, we disregard this qualification to avoid vagueness. Dec. 19 n.6; Dr. Mahon agrees. Ex. 2201 ¶ 47. ordinary skill in the art is supported by testimonial evidence by both parties and appears consistent with the types of problems and solutions in the ’797 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:21–2:29 (“Technical Field” and “Background” sections of the ’797 patent, describing background knowledge about methods for tracking packages using sensor devices including radio frequency identification (RFID) systems).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We agree with Qualcomm’s interpretation of the prosecution history. Although Zhou teaches collecting only a subset of sensor data that it could have collected, it reports all data it collects. Thus, the evidence does not suggest that Zhou discloses or teaches “reporting the received sensor information to the party at a level of specificity that is less than the level of specificity of sensor information collected by a sensor.” Ex. 1001, 25:13–16. Thus, the applicant’s amendment distinguished Zhou for reasons other than what FedEx suggests, and the prosecution history does not suggest that a person of ordinary skill in the art would have understood the phrase “reporting . . . at a level of specificity” to exclude reporting a specific subset of the collected information.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Having considered the arguments and evidence of record, we find more persuasive Qualcomm’s argument that its proposed, relatively minor modification of Lau—which simply involves incorporating Buford’s validator 401 and rule maker 304 as part of Lau’s tracking server 114 and tracking database 116—would not fundamentally change Lau’s system. We agree that the access-control concepts on which Qualcomm relies from Buford would be generally applicable in both push and pull architectures. And such a modification would have been within the ordinary skill in the art at the time of the claimed invention. FedEx also argues that Qualcomm has failed to assert a sufficient obviousness rationale because it “does not articulate what Lau lacks that Buford adds.” PO Resp. 56 (citing Ex. 2201 ¶¶ 151–154; Nokia of Am. Corp. v. Oyster Optics, LLC, IPR2017-02146, Paper 40 at 46–47, 49 (PTAB Feb. 13, 2019); Cisco Sys., Inc. v K.Mizra LLC, IPR2021-00593, Paper 41 at 34 (PTAB Sept. 19, 2022); Apple Inc. v. Masimo Corp., IPR2020-01524, Paper 29 at 47 (PTAB Apr. 29, 2022). We disagree that Qualcomm is required to make such a showing. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). For the above reasons, we find persuasive Qualcomm’s argument that” slip op. at 22

  Patent outcomesUS 8,766,797 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,766,797
• Qualcomm Incorporated v. Fedex Corporate Services, Inc.Some claims unpatentable
  PTAB · Oct 6, 2023 · IPR2022-00586 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–15 and 26–30 are unpatentable as obvious over Lau and Benson; claim 28 also relies on Harring. Qualcomm did not show claims 16–25 unpatentable.

  RulingsFinal written decision

  • Exclude

    “We do not rely on Exhibits 1010, 1014, 1026, or 1027 for any determinations or findings in this decision. See infra note 10 (noting the context in which Ex. 1014 has been cited). When we use the phrase “evidence of record” or other similar terms or phrases, we are referring to the evidence of record except that evidence that is the subject of FedEx’s Motion to Exclude, that is, Exhibits 1010, 1014, 1026, 1027, and 2049. Accordingly, Patent Owner’s Motion to Exclude as to Exhibits 1010, 1014, 1026, and 1027 is dismissed as moot.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Almeroth essentially agrees with Qualcomm’s articulation of the level of ordinary skill as expressed above. See Ex. 2200 ¶¶ 45–46. Because Qualcomm’s uncontroverted articulation of the level of ordinary skill in the art is supported by testimonial evidence by both parties and appears consistent with the types of problems and solutions in the ’231 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:16–2:37 (“Field of the Disclosure” and “Background” sections of the ’231 patent, describing background knowledge about methods for tracking packages using wireless sensor devices). Qualcomm also contends that an ordinarily skilled artisan “would have been familiar with the field of technology described [on pages 7–13 of 6 Qualcomm argues that this is “at least” the level of ordinary skill in the art. Pet. 7. As we did in our instituting decision, we disregard this qualification to avoid vagueness. Dec. 19 n.6; Dr. Almeroth agrees. Ex. 2200 ¶ 46. the Petition].” Id. (citing Ex. 1002 ¶ 41). The “Field of Technology” section of the Petition refers to background knowledge of RFID technology and hierarchical sensor networks. See Pet. 7–13. Because whether this subject matter is part of the background knowledge in the art is not determinative of our decision, we need not adopt this part of Qualcomm’s articulation of the level of ordinary skill.” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Although the ’231 patent does appear to describe these as two separate embodiments, the embodiments both include smartphone 200. See Ex. 1001, 110:13–14, 19–20, 23–26. We find persuasive Qualcomm’s argument that the only apparent difference between the two embodiments is that in the second one, smartphone 200 has an app that allows it to use hardware capable of directly communicating with the server. In other words, the distinction is a matter of programming: the smartphone 200 is both “unable” and “not operable to” communicate with a server when it is not presently configured that way through software. This is inconsistent with Dr. Almeroth’s opinion that a device would not be “unable to directly communicate with the server” if it “ha[s] the circuitry components necessary to communicate with a server but simply lack the programming to do so presently.” Ex. 2200 ¶ 54. Thus, we do not find his testimony credible on this point.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction needed

    “Although the ’231 patent does appear to describe these as two separate embodiments, the embodiments both include smartphone 200. See Ex. 1001, 110:13–14, 19–20, 23–26. We find persuasive Qualcomm’s argument that the only apparent difference between the two embodiments is that in the second one, smartphone 200 has an app that allows it to use hardware capable of directly communicating with the server. In other words, the distinction is a matter of programming: the smartphone 200 is both “unable” and “not operable to” communicate with a server when it is not presently configured that way through software. This is inconsistent with Dr. Almeroth’s opinion that a device would not be “unable to directly communicate with the server” if it “ha[s] the circuitry components necessary to communicate with a server but simply lack the programming to do so presently.” Ex. 2200 ¶ 54. Thus, we do not find his testimony credible on this point. Regarding FedEx’s term-differentiation argument, we agree with Qualcomm that, based on the above evidence in the ’231 patent disclosure, there does not appear to be any meaningful difference between “unable to” and “not operative to” as those terms appear in the claims. Thus, we disagree with FedEx’s proposed construction of “unable to directly communicate with the server.” Our prior-art analysis below will be informed by the discussion above, but we need not explicitly construe this term to resolve the issues raised in the Petition. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  Patent outcomesUS 9,182,231 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,182,231
• Xilinx, Inc. v. Polaris Innovations LimitedInstitution denied
  PTAB · Sep 18, 2023 · IPR2023-00517 · APJ Minn Chung · IPR · Institution

  The Board denied institution on all challenged claims because neither Slemmer alone nor Slemmer with Gasbarro showed a reasonable likelihood of proving the claims obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review may not be authorized unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we conclude that the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any challenged claim of the ’473 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner states that “[f]or the limited purpose of this Preliminary Response, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so if trial is instituted.” Prelim. Resp. 11. For purposes of this Decision, based on our review of the ’473 patent, the types of problems and solutions described in the ’473 patent, and cited prior art, we adopt and apply Petitioner’s unopposed definition of a person of ordinary skill in the art.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “because it is not dispositive—the art teaches the claims under any construction.” Pet. 9. Patent Owner addresses constructions for two claim terms recited in claims 1 and 20—“outputting data to said bus that is other than data which would be output to said bus during normal operation” and “outputting no data to the bus.” Prelim. Resp. 11–16. Patent Owner asserts that the term “outputting data to said bus that is other than data which would be output to said bus during normal operation” should be construed to mean “instead of the data which would be output to the bus by the circuit component during normal operation, outputting data to the bus that is other than the data which would be output to the bus during normal operation.” Id. at 11–12. As for the claim term “outputting no data to the bus,” Patent Owner argues that the term should be interpreted to mean “outputting no data to the bus when and so long as the circuit component is being tested.” Id. at 12–16. Based on the record presented, we do not discern a need to construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “not teach “outputting no data to said bus” “during testing” as recited in claim 1 (limitation [1.3]) or “while testing” as recited in claim 20 (limitation [20.3]). Prelim. Resp. 29–34. We agree with Patent Owner that none of the operations in Figure 9 of Slemmer cited by Petitioner describe any operation performed “during testing” or “while testing,” as recited in limitation [1.3] or limitation [20.3]. As discussed above in Section III.C.2, Slemmer describes that line T is used to enable the special test mode “prior to such time as special test operations are performed.” Ex. 1005, 35:22–30 (emphasis added). Slemmer also describes that “upon the entry into a special test mode at time t3 of FIG. 9, line T is driven by test mode enable circuitry 29 to a high logic level.” Id. at 36:22–24 (emphasis added). Slemmer further describes that “with line 32 from parallel test circuitry 28 remains high (i.e., the parallel test either passed, or has not taken place),” terminals DQ “go into an active state at time t4” to present a low impedance state. Id. at 36:26–32 (emphasis added). Thus, Slemmer discloses that the enabling of the special test mode at time t3 or time t4 described in Figure 9—which Petitioner relies on as teaching “outputting no data to said bus” (at time t3) and “outputting data to said bus that is other than data which would be output to said bus during normal operation” (at time t4)—takes place before the test operations are performed.” slip op. at 18

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,701,473
• Xilinx, Inc. v. Polaris Innovations LimitedInstituted
  PTAB · Sep 15, 2023 · IPR2023-00516 · APJ Minn Chung · IPR · Institution

  The Board instituted review of claims 1, 2, and 8–13 on all petition grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments and evidence presented in Patent Owner’s Preliminary Response, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’589 patent, based on all grounds raised in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Citing testimony from Dr. Melvin, Petitioner asserts a person of ordinary skill in the art (“POSITA”) at the relevant time would have had “a Bachelor’s degree in Electrical Engineering or Computer Science and two years of experience” or “equivalent education, work, or experience in this field.” Pet. 21 (citing Ex. 1003 ¶¶ 31–34). According to Dr. Melvin, “[m]ore education could substitute for experience, and vice versa.” Ex. 1003 ¶ 33. Patent Owner states that “[f]or the limited purpose of this Preliminary Response, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so in the event that trial is instituted.” Prelim. Resp. 11. For purposes of this Decision, based on our review of the ’589 patent, the types of problems and solutions described in the ’589 patent, and cited prior art, we adopt and apply Petitioner’s unopposed definition of a person of ordinary skill in the art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner asserts that “construction of terms is unnecessary because it is not dispositive to this case—the art teaches the limitations under any construction under the Phillips standard.” Pet. 21. Patent Owner states that we need not construe any claim term for purposes of this Decision. See Prelim. Resp. 11. Based on the record presented, we need not construe any claim term for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). C. Asserted Grounds of Unpatentability Based on Lee or the Combination of” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “motivation to combine the references because “[w]hile Lee does expressly illustrate the ‘circuitry’ that is initialized by the reset signal ϕRST output from its initialization circuit, Iketani illustrates and describes in detail the various circuits, including the control circuit, that receive and are initialized by such an initialization signal.” Pet. 59 (emphasis added) (citing Ex. 1003 ¶ 140). Petitioner further asserts that the proposed combination “amounts to a simple substitution of one component (i.e., Lee’s initialization circuit) for another (i.e., Iketani’s power on reset circuit), and a POSITA would have understood that this substitution would yield predicable results.” Id. at 61 (citing Ex. 1003 ¶ 143).” slip op. at 23

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,157,589
• Apple Inc. v. Speir Technologies Ltd.Instituted
  PTAB · Aug 21, 2023 · IPR2023-00496 · APJ Barbara A Parvis · IPR · Institution

  The Board instituted IPR on claims 1–4 and 7–14, finding a reasonable likelihood that Diener and Bergstrom render the challenged claims obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “At this stage, Petitioner’s undisputed reasons for combining Diener and Bergstrom are sufficiently persuasive for institution. Petitioner’s undisputed arguments that a person having ordinary skill in the art would have had a reasonable expectation of success (Pet. 29– 31) also are sufficient for purposes of institution.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner has not filed Preliminary Response. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’780 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Based on the record at this early stage in the proceeding, for purposes of this Decision, we preliminarily adopt Petitioner’s constructions, which are consistent with the intrinsic record, as set forth below. Claim Term Adopted Construction “short term” “on the order of seconds” “long term” “on the order of weeks, or greater” “self interference”” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “At this stage, Petitioner’s undisputed reasons for combining Diener and Bergstrom are sufficiently persuasive for institution. Petitioner’s undisputed arguments that a person having ordinary skill in the art would have had a reasonable expectation of success (Pet. 29– 31) also are sufficient for purposes of institution.” slip op. at 15

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,345,780
• Apple Inc. v. Speir Technologies Ltd.Instituted
  PTAB · Aug 8, 2023 · IPR2023-00542 · APJ Scott Raevsky · IPR · Institution

  Instituted inter partes review of claims 1–7, 9, and 10 on all asserted grounds; the Board found a reasonable likelihood that Marek and Skarine render at least one challenged claim obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied

    “Turning to our analysis, we note at the outset that General Plastic is inapplicable here because Petitioner filed parallel, not serial, petitions. See General Plastic, Paper 19 at 10 (“Applying these factors to the follow-on petitions, we conclude that the circumstances do not warrant institution of inter partes reviews.” (emphasis added)). Although our discretion to institute under 35 U.S.C. § 314(a) is at issue, the more appropriate inquiry here is explained in the Trial Practice Guide as follows: Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Nonetheless, the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references. In such cases two petitions by a petitioner may be needed, although this should be rare. CTPG 59. The Trial Practice Guide further states that when submitting parallel petitions, Petitioner should submit a notice ranking petitions along with a succinct explanation of their differences, why the issues addressed by those differences are material, and why the Board should exercise its discretion to institute additional petitions. Id. at 60. Patent Owner’s preliminary responses in this and the ’543 petition argue for discretionary denial of the respective petition in light of the other petition having been filed. Patent Owner does not argue that both petitions should be discretionarily denied. Having considered the issue in both petitions and based on Petitioner’s ranking, we decline to exercise our discretion to deny institution of this Petition. Accordingly, we consider this Petition on the merits and decide whether to discretionarily deny the second ranked ’543 petition based on the arguments presented in that proceeding.” slip op. at 9

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “At this stage, Petitioner’s reasons for combining Marek and Skarine are sufficiently persuasive for institution. For instance, we agree with Petitioner, on this record, that “a POSITA would have been motivated to pursue this implementation because doing so enables the mobile device to be used to carry out ‘voice communications,’ e.g., phone calls or voicemail, which was conventional mobile device functionality.” Pet. 15. We further agree with Petitioner, at this stage, that this implementation would merely be “the application of known techniques (e.g., a speaker and microphone communicatively connected to a mobile device processor) by a known system (e.g., Marek’s untrusted host mobile device) to yield predictable results (e.g., a mobile device with conventional audio capabilities).” Id. at 16. Patent Owner’s arguments are unavailing at this stage. Although Patent Owner is correct that the challenged claims do not recite an “audio interface,” Petitioner applies Skarine’s speaker and microphone disclosure to the claimed “non-secure human/machine interface.” Pet. 14, 57. Patent Owner does not dispute that a speaker and microphone constitute a non-secure human/machine interface, and on this record, we agree with Petitioner that they do. Thus, Patent Owner’s first contention that the combination is improper because the claims do not recite an audio interface is inapposite because on this record, Skarine’s audio interface discloses the claimed non-secure human/machine interface. Patent Owner’s second contention, that there is no motivation to combine because “Marek already teaches wireless communications with a Secure Computing Module interfaced with an untrusted PDA” is also unavailing on this record. See Prelim. Resp. 11. On this preliminary record, we determine that Marek’s wireless communications disclosure does not undermine Petitioner’s rationale to combine Skarine’s speaker and microphone with Marek. See Pet. 14. Patent Owner provides no explanation for this argument. See Prelim. Resp. 11. Accordingly, on this record, Petitioner’s rationale to combine is” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that a person of ordinary skill in the art . . . (“POSITA”) would have been a person with a Bachelor’s degree in electrical engineering, computer science, computer engineering, or a related field, and at least two years of work experience with computer architecture and system security, including cryptography. Greater education or greater experience could compensate for a deficiency in either of these criteria. Pet. 4 (citing Ex. 1003 ¶¶ 17–18). Patent Owner does not dispute Petitioner’s proposed level of skill in the art at this stage. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’399 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “In inter partes review, we construe a claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). The parties do not propose any claim constructions. Pet. 4–5; see generally Prelim. Resp. As no terms are in dispute, we determine that no terms require construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,765,399

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.